Patent Owner’s Request for Adverse Judgment in CBM Does Not Support Attorney Fees Award in Related Litigation

The court denied defendant's motion for attorney fees under 35 U.S.C. § 285 where the patent owner filed for a cancellation of claims during CBM review while plaintiff's motion to dismiss was pending. "Defendant argues that bad faith can be inferred from Plaintiff’s decision to cease defending the [patent-in-suit] before the PTAB and [the patent owner's] request for adverse judgment to the PTAB. Defendant points to the proximity of Plaintiff’s and [the patent owner's] actions to the closing of the PTAB’s argument deadline as evidence that Plaintiff was motivated by a bad faith purpose of avoiding litigation on the merits. However, Plaintiff has presented to the Court a business explanation for terminating its defense before the PTAB -- that any potential damages would be low due to Defendant’s low revenue and the [patent’s] imminent expiration date. This explanation weighs against a finding of bad faith."

Credit Card Fraud Control Corporation v. MaxMind, Inc., 3-14-cv-03262 (TXND April 7, 2016, Order) (Lynn, J.)